WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Facebook Technologies, LLC v. Arron Fletcher, Intellisupport Limited
Case No. D2019-0267
1. The Parties
The Complainant is Facebook Technologies, LLC of Menlo Park, California, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Arron Fletcher, Intellisupport Limited of Halifax, United Kingdom, self-represented.
2. The Domain Names and Registrar
The disputed domain names <oculusrift-uk.com>, <oculus-rift-vr.com>, <oculusrift-vr.com>, <oculus-uk.com>, <oculusuk.com> and <oculusvr-uk.com> are registered with Mesh Digital Limited (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 1, 2019. On February 4, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 5, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 6, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 26, 2019. The Respondent submitted an informal response on February 26, 2019.
The Center appointed Edoardo Fano as the sole panelist in this matter on March 14, 2019. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties.
The language of the proceeding is English, being the language of the Registration Agreements, as per paragraph 11(a) of the Rules.
4. Factual Background
The Complainant is Facebook Technologies, LLC (formerly called Oculus VR, LLC), a United States technology company subsidiary of Facebook, Inc., owning several trademark registrations for OCULUS, OCULUS RIFT and OCULUS VR, among which:
- United States Trademark Registration No. 4891157 for OCULUS, registered on January 26, 2016 (first use in commerce March 27, 2013);
- United States Trademark Registration No. 4863585 for OCULUS RIFT, registered on December 1, 2015 (first use in commerce April 1, 2013);
- United States Trademark Registration No. 4424543 for OCULUS VR, registered on October 29, 2013 (first use in commerce November 12, 2012).
The Complainant operates on the Internet at several websites, among which “www.oculus.com”, “www.oculusrift.com”, “www.oculusvr.com”, as well as many country code extensions.
The Complainant provided evidence in support of the above.
The disputed domain names were registered on March 26, 2014, according to the WhoIs records, and when the Complaint was filed the websites at the disputed domain names were not active.
The Respondent registered 19 additional domain names under the country code “.co.uk” incorporating the Complainant’s trademarks OCULUS, OCULUS RIFT and OCULUS VR, in respect of which the Complainant filed a separate complaint.
On May 23, 2018 the Complainant’s lawyers sent a cease and desist letter to the Respondent, both by email and registered post, and a reminder on July 26, 2018: the Respondent did not reply to either of them.
5. Parties’ Contentions
The Complainant states that the disputed domain names are confusingly similar to its trademarks OCULUS, OCULUS RIFT and OCULUS VR, since they fully incorporate the Complainant’s trademarks.
Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain names since it has not been authorized by the Complainant to use them.
The Complainant submits that the Respondent has registered the disputed domain names in bad faith, since the Complainant’s trademarks OCULUS, OCULUS RIFT and OCULUS VR are renowned throughout the world in connection with virtual reality headsets for video games. Therefore, the Respondent had knowledge of the Complainant’s trademarks at the time of registration of the disputed domain names and the Complainant cannot see a use of the disputed domain names by the Respondent that would not amount to bad faith.
The Respondent has made no formal response to the Complainant’s contentions. However, the Respondent submitted an informal email communication on February 26, 2019. In his email, the Respondent stated the following:
“Further to the recent correspondence regarding the above domain names and the subsequent dispute, please find details below of our response.
a) At no point did Intellisupport Ltd obtain these domain names with the intent to use in bad faith or resell back to Oculus for inflated prices.
b) It was never our intention to infringe on any Trade marks
c) Intellisupport Ltd actively worked with the DK1 models & DK2 Models since 2013 and prior to the acquisition by Facebook in 2014. Due to our active involvement in the gaming centre and Internet café industry since 2007 and due to our involvement with Steam in the CyberCafe Program, we were actively testing and developing these headsets for use within these environments since this time. These domain names were purchased with the intent of using them as part of a working relationship between the two companies.
d) We are still awaiting a response from Oculus regarding using these units in a commercial environment in a similar fashion to some of the other commercial VR headsets which are readily available.
e) As per the document provided by the complainant titled “Annexes 7 to 14.pdf”, Annex 8 shows there is no URL links whatsoever that resolves to our domain names within the Google search engine.
f) At no point have these domain names been directed to an active website, as per Annex 9 clearly shows manual resolution resolves to nothing, and therefore have not been used to bring about any loss or potential loss to Oculus and our actions ensured nothing nefarious came about to these domain names.
g) We would very much like to work with Facebook and Oculus within the UK but understand that if this is not in line with Facebook Corporate Policy. We will be happy to transfer the domain names listed above and give Oculus the opportunity to take these off our hands and prevent them from going back into the public domain. We would appreciate the costs which Intellisupport Ltd have incurred for creation and ongoing renewal of these domains which has been at cost of £227.64 + VAT to be covered by Oculus.
If I can be of any further assistance please do not hesitate to contact me on the details provided below.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant is the owner of the trademarks OCULUS, OCULUS RIFT and OCULUS VR both by registration and acquired reputation and that the disputed domain names are confusingly similar to the trademarks OCULUS, OCULUS RIFT and OCULUS VR.
Regarding the addition of the letters “uk” to some of the disputed domain names, the Panel notes that it is now well established that the addition of descriptive terms or letters to a domain name does not prevent the confusing similarity between the domain name and a trademark (see, e.g., Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti, WIPO Case No. D2005-0037; Red Bull GmbH v. Chai Larbthanasub, WIPO Case No. D2003‑0709; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713). The addition of the letters “uk” does not therefore prevent the disputed domain names incorporating these letters from being confusingly similar to the Complainant’s trademarks.
It is also well accepted that a generic Top-Level Domain (“gTLD”), in this case “.com”, may be ignored when assessing the similarity between a trademark and a domain name (see, e.g., VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607).
The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain names are confusingly similar to the Complainant’s trademarks, pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Respondent has failed to file a formal response in accordance with the Rules, paragraph 5. The Panel has however considered the Respondent’s submission of February 26, 2019.
The Complainant, in its Complaint and as set out above, has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. It asserts that the Respondent is not using the disputed domain name for a legitimate noncommercial or fair use or in connection with a bona fide offering of goods or services.
The prima facie case presented by the Complainant shifts the burden of production to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name. The Respondent in its informal response stated that the disputed domain names were not used and could be transferred to the Complainant in exchange for their registration and renewal costs. At this point, the Parties were offered by the Center the possibility to suspend the UDRP proceeding to implement a settlement agreement, pursuant to paragraph 17 of the Rules: the Respondent did not reply, while the Complainant preferred to proceed with the case.
According to the current state of UDRP decisions in relation to the Respondent’s consent to transfer as summarized in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition(“WIPO Overview 3.0”), section 4.10:
“(…) In some cases, despite such respondent consent, a panel may in its discretion still find it appropriate to proceed to a substantive decision on the merits. Scenarios in which a panel may find it appropriate to do so include (i) where the panel finds a broader interest in recording a substantive decision on the merits – notably recalling UDRP paragraph 4(b)(ii) discussing a pattern of bad faith conduct, (ii) where while consenting to the requested remedy the respondent has expressly disclaimed any bad faith, (iii) where the complainant has not agreed to accept such a consent and has expressed a preference for a recorded decision, (iv) where there is ambiguity as to the scope of the respondent’s consent, or (v) where the panel wishes to be certain that the complainant has shown that it possesses relevant trademark rights.”
The Panel believes that at least two of the above scenarios, namely (ii) and (iii), are present in the current case and that the Respondent was already given the opportunity to transfer the disputed domain names to the Complainant when it was contacted by the Complainant’s lawyers, both by email and registered post. The Panel therefore decides to proceed to a substantive decision on the merits.
In its informal response the Respondent has not presented any evidence of any rights or legitimate interests it may have in the disputed domain names, on the contrary, the Respondent admits that they correspond to the Complainant’s trademarks and were registered with the hope of a future collaboration with the Complainant. The Panel finds that registering a domain name with the intent of bargaining a collaboration with a trademark holder is not a bona fide use of a domain name.
The Panel therefore finds that paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that “for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that [the respondent has] registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) that [the respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) that [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.”
The above-listed criteria is non-exclusive and bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of a complainant’s mark. See WIPO Overview 3.0, section 3.1.
Regarding the registration in bad faith of the disputed domain names, the reputation of the Complainant’s trademarks OCULUS, OCULUS RIFT and OCULUS VR in the field of virtual reality is clearly established and the Panel finds that the Respondent knew of the Complainant, and deliberately registered the disputed domain names with the intent to negotiate a working relationship between the Respondent and the Complainant (as admitted by the Respondent in its informal response).
Regarding the use in bad faith of the disputed domain names, pointing to inactive websites, the Panel considers that bad faith may exist even in cases of so-called “passive holding”, as found in the landmark UDRP decision Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In the circumstances of this case, the Panel finds that such passive holding amounts to bad faith use.
The Panel finds that the Complainant established its burden of proof with respect to the issue of whether the Respondent has registered and is using the disputed domain names in bad faith.
The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been satisfied.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <oculusrift-uk.com>, <oculus-rift-vr.com>, <oculusrift-vr.com>, <oculus-uk.com>, <oculusuk.com> and <oculusvr-uk.com> be transferred to the Complainant.
Date: March 30, 2019